• “Heritage” Brands Revisited

    by  • August 8, 2008 • trademark

    Thanks to John Welch for pointing me to a new decision from the TTAB, Chrysler LLC v. Pimpo. Chrysler LLC opposed the registration of the mark RAMBLER for “automobiles and structural parts therefor” by Anthony S. Pimpo. RAMBLER is, of course, a model of car that was produced from 1950 to 1969 – you may be familiar with an earlier trademark dispute over the RAMBLER name, American Motors Corp. v. Action-Age, Inc., 179 U.S.P.Q. 377 (TTAB 1973).

    Mr. Pimpo originally filed the application for “automobiles and automobile associated goods; parts and memorabilia pertaining to this specific brand.” Mr. Pimpo had also filed applications for ASPEN and STINGRAY, also well-known car brands, so it’s pretty clear that Mr. Pimpo was referring to the original RAMBLER automobile in his application.

    The TTAB held that the RAMBLER mark was abandoned for automobiles, but that Chrysler successfully established trademark rights in RAMBLER for some collateral goods earlier than the filing date of Mr. Pimpo’s application. Saving a discussion of the merits for another day, the case is interesting in its description of the licensing of the RAMBLER brand for these collateral goods. I previously blogged on River West Brands, a company that identifies unused marks with residual goodwill and builds a new business around them. Chrysler has a somewhat different approach; a company called the Joester-Loria Group is a licensing agency that acts on behalf of Chrysler to license the “heritage” RAMBLER mark. As described by the president and chief executive officer of the agency during her deposition:

    We develop and execute licensing strategies for our clients, so we will start with strategic planning for their marks and execute those programs, including negotiating terms of agreements, developing the contracts, reviewing product for quality control and appropriateness, and managing the retail distribution and revenue collection.

    As she explained it,

    One of the most important trends of the last several years has certainly been the return of retro or heritage intellectual property . . . . [A heritage mark] is a mark that existed sometime 20, 30 years ago, had built an affinity and emotional connection with the consumer as a result of the original product that was in the marketplace, and continues to have nostalgia appeal with consumers who are still interested in acquiring product that is built around the mark’s core values and replicates the markets and the mark itself.

    The use of RAMBLER for collateral goods began in 1995, 25 years after the last production of the automobiles. Nevertheless, Joester-Loria successfully obtained royalty-bearing licenses for calendars, key rings, toy replicas of the cars, fabrics, lighters, carrying bags, decals, owner’s manuals, sales literature, stripe kits, and specification sheets, all without any active registration for RAMBLER for automobiles or any other goods or services.

    What’s right or wrong here? How many of the licensees are simply paying a toll to avoid the uncertainty of suit (or signed up under threat of suit)? Is Chrysler entitled to the financial benefit of the residual goodwill in the mark? If not Chrysler, then who, or no one?

    Here’s a link to John’s stellar blog on all things TTAB, most notable of late for the admirable restraint of his proclivity for punning in this post.